laluxe | Decision 2736588
Date Published: Sep 25, 2017
OPPOSITION No B 2 736 588
Laboratoire Nuxe, 19, rue Péclet, 75015 Paris, France (opponent), represented by Ipsilon, Le Centralis, 63, avenue du Général Leclerc, 92340 Bourg-la-Reine, France (professional representative)
a g a i n s t
Institut des Cosmétiques de la Nouvelle Génération "La Luxe" Sarl, 102 avenue des Champs-Elysees, 75008 Paris, France (applicant), represented by Sołtysiński Kawecki & Szlęzak - Kancelaria Radców Prawnych I Adwokatów, ul. Jasna 26, 00-054 Warszawa, Poland (professional representative).
On 27/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 736 588 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 050 834. The opposition is based on, inter alia, European Union trade mark registration No 13 609 599. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 13 609 599.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Leather preservatives (polishes); Creams for leather; Dentifrices; Cosmetics; Perfumes, toilet water, eau de Colgone, body deodorants; Essential oils; Extracts of plant for cosmetic purposes; Soaps, cleansing milk; Cosmetic creams, gels, milks, lotions, masks, pomades, powders, serums and preparations for skin care; Anti-wrinkle preparations; Cosmetic preparations for lip care; Sun-tanning preparations (cosmetics), after-sun preparations (cosmetics); Cosmetic preparations for slimming purposes; Depilatories; Hair products (hair and scalp care preparations); Baths (Cosmetic preparations for -); Make-up and make up removing preparations; Preparations for shaving and after-shave preparations; Tissues and wipes impregnated with cosmetic lotions; Cotton wool for cosmetic purposes, Cotton sticks for cosmetic purposes, Round pads for removing make-up; Incense, Perfume water, Room perfumes, Sachets for perfuming linen.
Class 5: Pharmaceutical, veterinary and sanitary preparations for medical purposes and for personal hygiene; Dietetic substances adapted for medical use, Plant-based dietetic preparations adapted for medical use, Medicinal herbs, Herbal teas for medicinal purposes; Sugar for medical purposes; Food for babies; Adhesive bands for medical purposes, Materials prepared for bandages (dressings), Menstruation bandages; Material for stopping teeth, dental wax; Disinfectants for medical or sanitary purposes (other than soaps); Preparations for destroying vermin, fungicides, herbicides, parasiticides; Bath preparations for medical purposes; Creams, gels, milks, lotions, serums and pomades for medical purposes; Dermatological and pharmaceutical preparations for skin care, Sun blocking preparations for medical use; Babies' diapers of paper and cellulose (disposable).
Class 44: Medical services, Hospitals, Veterinary services; Convalescent homes and rest homes, medically supervised homes; Opticians' services; Hygienic and beauty care for human beings or animals, massages, beauty salons, care services (saunas), spas (care and beauty services), balneotherapy, physiotherapy, aromatherapy; Agriculture, horticulture and forestry services; Farming (animals); Gardening, landscape gardening and plant nurseries.
The contested goods and services are the following:
Class 3: Cosmetics; Body cleaning and beauty care preparations; Skincare cosmetics; Skin care preparations; Non-medicated beauty preparations; Exfoliants for the care of the skin; Exfoliants; Exfoliant creams; Body scrub; Cosmetic moisturisers; Cosmetics for use in the treatment of wrinkled skin; Creams for firming the skin; Skin whitening creams; Skin conditioners; Skin masks [cosmetics]; Cleaning masks for the face; Face packs; Face packs; Skin moisturizer masks; Gel eye masks; Body mask cream; Face packs; Cleansing masks; Skin toners; Milky lotions for skin care; Cleansing milks for skin care; Cleansing milk for toilet purposes; Body milks; Make-up removing milks; Make-up removing lotions; Make-up removing gels; Make-up removing creams; Eye make up remover; Skin care oils [non-medicated]; Body oils [for cosmetic use]; Hand creams; Hand lotions; Cosmetic hand creams; Hand cleansers; Deodorants for the feet; Non-medicated foot lotions; Slimming aids [cosmetic], other than for medical use; Lotions for cellulite reduction; Creams for cellulite reduction; Soaps; Skin cleansers [cosmetic]; Soaps for body care; Non-medicated toilet soaps; Soap free washing emulsions for the body; Washing creams; Washing liquids; Wipes impregnated with a skin cleanser; Impregnated cleaning pads impregnated with toilet preparations; Artificial tanning preparations; After sun moisturisers; Sun bronzers; Sun blocking preparations [cosmetics]; After-sun oils [cosmetics]; Suntanning oil [cosmetics]; Tanning milks [cosmetics]; Make-up preparations; Make-up removing preparations; Skin foundation; Cosmetic face powders; Foot powder [non-medicated]; Cosmetic rouges; Lipstick; Lip gloss; Eyelid shadow; Under-eye enhancers; Hair mascara; Cosmetics for eye-lashes; Eyelash dye; Mascara; Eyeliner pencils; Eyeliner; Cosmetic pencils; Lip balms [non-medicated]; Concealers; Nail polish; Nail varnish for cosmetic purposes; Nail hardeners [cosmetics]; Cuticle oil; Nail care preparations; Nail polish remover; Cosmetics for the use on the hair; Hair preparations and treatments; Hair moisturisers; Hair preparations and treatments; Shampoo; Hair nourishers; Styling lotions; Oils for hair conditioning; Oil baths for hair care; Hair spray; Hair spray; Mousses being hair styling aids; Hair styling waxes; Tooth care preparations; After-sun lotions; Sun-tanning gels; After-sun oils [cosmetics]; Sun-tanning oils; Sun-tanning gels; Creams for tanning the skin; Douching preparations for personal sanitary or deodorant purposes [toiletries]; Extracts of perfumes; Perfume; Perfumed tissues; Perfumery; Cologne; Perfumed toilet waters; Toilet water; Natural perfumery; Oils for perfumes and scents; Scented body spray; Oils for perfumes and scents; Oils for cosmetic purposes; Depilatory lotions; Wax (Depilatory -); Depilatory creams; Hair removal and shaving preparations; Shaving gel; Shaving cream; Shaving preparations; Shaving foam; Shaving preparations in liquid form; After-shave preparations; Aftershave balms; After-shave emulsions; Aftershave milk; After-shave preparations; Toiletries; Perfumed toilet waters; Deodorants and antiperspirants; Antiperspirants [toiletries]; Anti-perspirants in the form of sprays; Deodorants for body care; Body deodorants [perfumery]; Anti-perspirant deodorants; Sanitary preparations being toiletries; Scented oils; Non-medicated oils; Oils for toilet purposes; Body oils [for cosmetic use]; Mineral oils [cosmetic]; Massage oils; Room scenting sprays; Hair tonic; Bath foam; Bath herbs; Bath salts; Bath salts; Bath oil; Bubble bath; Liquid bath soaps; Liquid soap used in foot bath; Bath and shower gels, not for medical purposes.
Class 5: Medicinal creams for the protection of the skin; Medical preparations for slimming purposes; Scrubs [preparations] for medical use; Feminine hygiene products; Car deodorants; Air deodorising preparations; Tonics [medicines]; Tonics for medical use; Salts for mineral water baths; Therapeutic medicated bath preparations; Hand-sanitizing preparations; Creams (Medicated -) for the feet; Foot care preparations for medical use; Medicinal oils.
Class 44: Removal of body cellulite; Cellulitis treatment services; Beauty salons; Beauty salons; Manicuring; Pedicurist services; Services for the care of the feet; Foot massage services.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Several of the contested goods and one of the contested services appear more than once (for example face packs and hair preparations and treatments). They will, however, only be listed and compared once in the following comparisons.
Contested goods in Class 3
The contested cosmetics; skin care preparations; soaps; make-up preparations; make-up removing preparations; perfume; cologne; toilet water; perfumed toilet waters; shaving preparations; room scenting sprays are identically contained in the opponent’s list of goods in Class 3 (including synonyms).
The contested body cleaning preparations; exfoliants for the care of the skin; exfoliants; exfoliant creams; body scrub; cleaning masks for the face; cleansing masks; hand cleansers; skin cleansers [cosmetic]; soap free washing emulsions for the body; washing creams; washing liquids; wipes impregnated with a skin cleanser; impregnated cleaning pads impregnated with toilet preparations; douching preparations for personal sanitary or deodorant purposes [toiletries] are included in the broad category of the opponent’s cleaning preparations in Class 3. Therefore, they are identical.
The contested beauty care preparations; skincare cosmetics; non-medicated beauty preparations; cosmetic moisturisers; cosmetics for use in the treatment of wrinkled skin; creams for firming the skin; skin whitening creams; skin conditioners; skin masks [cosmetics]; face packs; skin moisturizer masks; gel eye masks; body mask cream; skin toners; milky lotions for skin care; body milks; skin care oils [non-medicated]; body oils [for cosmetic use]; hand creams; hand lotions; cosmetic hand creams; non-medicated foot lotions; oils for cosmetic purposes; toiletries; sanitary preparations being toiletries; mineral oils [cosmetic]; oils for toilet purposes; nail polish remover are included in the broad category of the opponent’s cosmetics in Class 3. Therefore, they are identical.
The contested slimming aids [cosmetic], other than for medical use; lotions for cellulite reduction; creams for cellulite reduction are included in the broad category of the opponent’s cosmetic preparations for slimming purposes in Class 3. Therefore, they are identical.
The contested cleansing milks for skin care; cleansing milk for toilet purposes are included in the broad category of the opponent’s cleansing milk in Class 3. Therefore, they are identical.
The contested soaps for body care; non-medicated toilet soaps; liquid bath soaps; liquid soap used in foot bath are included in the broad category of the opponent’s soaps in Class 3. Therefore, they are identical.
The contested artificial tanning preparations; after sun moisturisers; sun bronzers; sun blocking preparations [cosmetics]; after-sun oils [cosmetics]; suntanning oil [cosmetics]; tanning milks [cosmetics]; after-sun lotions; sun-tanning gels; after-sun oils [cosmetics]; sun-tanning oils; sun-tanning gels; creams for tanning the skin are included in the broad categories of the opponent’s sun-tanning preparations (cosmetics), after-sun preparations (cosmetics) in Class 3. Therefore, they are identical.
The contested make-up removing milks; make-up removing lotions; make-up removing gels; make-up removing creams; eye make up remover are included in the broad category of the opponent’s make up removing preparations in Class 3. Therefore, they are identical.
The contested skin foundation; cosmetic face powders; cosmetic rouges; lipstick; lip gloss; eyelid shadow; under-eye enhancers; hair mascara; cosmetics for eye-lashes; eyelash dye; mascara; eyeliner pencils; eyeliner; cosmetic pencils; lip balms [non-medicated]; concealers; nail polish; nail varnish for cosmetic purposes; nail hardeners [cosmetics]; cuticle oil; nail care preparations are included in the broad category of the opponent’s make-up preparations in Class 3. Therefore, they are identical.
The contested foot powder [non-medicated] overlaps with the broad category of the opponent’s cosmetic powders for skin care in Class 3. Therefore, they are identical.
The contested cosmetics for the use on the hair; hair preparations and treatments; hair moisturisers; shampoo; hair nourishers; styling lotions; oils for hair conditioning; oil baths for hair care; hair spray; mousses being hair styling aids; hair styling waxes; hair tonic are included in, or overlap with, the broad category of the opponent’s hair products (hair and scalp care preparations) in Class 3. Therefore, they are identical.
The contested deodorants for the feet; deodorants and antiperspirants; antiperspirants [toiletries]; anti-perspirants in the form of sprays; deodorants for body care; body deodorants [perfumery]; anti-perspirant deodorants are included in the broad category of the opponent’s body deodorants in Class 3. Therefore, they are identical.
The contested tooth care preparations include, as a broader category, the opponent’s dentifrices. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.
The contested perfumery; natural perfumery; scented body spray; extracts of perfumes are included in the broad category of the opponent’s perfumes in Class 3. Therefore, they are identical.
The contested oils for perfumes and scents; scented oils; non-medicated oils; massage oils are included in, or overlap with, the opponent’s essential oils in Class 3. Therefore, they are identical.
The contested depilatory lotions; wax (depilatory -); depilatory creams; hair removal preparations are included in the broad category of the opponent’s depilatories in Class 3. Therefore, they are identical.
The contested bath foam; bath herbs; bath salts; bath salts; bath oil; bubble bath; bath and shower gels, not for medical purposes are included in the broad category of the opponent’s baths (Cosmetic preparations for -) in Class 3. Therefore, they are identical.
The contested shaving gel; shaving cream; shaving foam; shaving preparations in liquid form; after-shave preparations; aftershave balms; after-shave emulsions; aftershave milk; after-shave preparations are included in the broad category of the opponent’s preparations for shaving and after-shave preparations in Class 3. Therefore, they are identical.
The contested perfumed tissues are considered to be highly similar to the opponent’s sachets for perfuming linens. These goods can have a similar nature, purpose and method of use. Furthermore they may come from the same producers and target the same end users via the same distribution systems.
Contested goods in Class 5
The contested medicinal creams for the protection of the skin; medical preparations for slimming purposes; scrubs [preparations] for medical use; tonics [medicines]; tonics for medical use; therapeutic medicated bath preparations; creams (medicated -) for the feet; foot care preparations for medical use; medicinal oils are included in the broad category of the opponent’s pharmaceutical preparations for medical purposes in Class 5. Therefore, they are identical.
The contested feminine hygiene products; salts for mineral water baths; hand-sanitizing preparations are included in the broad category of the opponent’s sanitary preparations for personal hygiene in Class 5. Therefore, they are identical.
The contested car deodorants; air deodorising preparations are similar to a low degree to the opponent’s room perfumes in Class 3. Whilst they have different specific purposes they do have a similarity in the nature, method of use and may be produced by the same manufacturers.
Contested services in Class 44
The contested beauty salons is identically contained in opponent’s list of services in Class 44.
The contested foot massage services are included in the broad category of the opponent’s massages in Class 44. Therefore, they are identical.
The contested removal of body cellulite; cellulitis treatment services; manicuring; pedicurist services; services for the care of the feet are included in the broad category of the opponent’s hygienic and beauty care for human beings or animals in Class 44. Therefore, they are identical.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods and services related to beauty and hygiene are directed at the public at large and the degree of attention can be expected to be average. However, for the goods and services related to medicine and health they are directed at the public at large and at business customers with specific professional knowledge or expertise, such as medical professionals and pharmacists. It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.
- The signs
NUXE | laluxe |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The signs are both word marks and are as shown above.
The opponent claims that the earlier trade mark “has no meaning per se, but it has been created from the combination of the French words NATURE and LUXE (in English “luxury”)”. Even if this is the case, and there is no reason to doubt the opponent on this point, consumers will not make this connection and the earlier mark has no meaning throughout the relevant territory.
The contested sign also has no meaning per se throughout the relevant territory. It is possible that a part of the public, for example a part of the French public, might see “luxe” as alluding to “luxury”, and this is because in French luxury is a masculine noun and would be prefixed always by the appropriate masculine article, “le”, and not as the case here “la”. This basic difference would not be lost on the French public.
Therefore, the relevant public will not split the contested sign into an article and noun and instead will be treated as an indivisible fanciful word. However, a part of the relevant public will perceive the allusion to luxury in the contested sign, albeit this will be lessened given the fact the sign uses the wrong article. Indeed, if the relevant public were perceived to see the contested sign as a clear reference to ‘the luxury’, it would have been objected to on absolute grounds for refusal.
Therefore, as neither sign has any clear and direct meaning for the goods and services in question they are considered to be of normal distinctiveness.
Visually, the signs coincide in their last three letters, namely ‘UXE’. However, they differ in their remaining letters, namely the first letter of the earlier mark, an ‘N’, and the contested sign’s first three letters, namely ‘LAL’. The signs, therefore, vary in their length; four letters versus six. Furthermore, the beginnings of the signs are also different (‘N’ versus ‘LAL’). The consumer normally attaches more importance to the first part of a word mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. It must be pointed out that visually even just the first letters, ‘N’ and ‘L’, are not visually similar letters in the same way that the letters ‘B’ and ‘E’ or ‘M’ and ‘N’ are.
Therefore, and bearing in mind that the differences are at the beginning of the signs where more attention is paid, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛UXE’, present identically in both signs. The pronunciation differs in the sound of the letters ‛N’ of the earlier mark and ‘LAL’ of the contested sign. The number of syllables will also differ with either one versus two (/NUX/ vs. /LA/LUX/) or two versus three /NUX/E/ or /NU/XE/ vs. /LA/LUX/E/ or /LA/LU/XE/).
Therefore, and bearing in mind that the differences are at the beginning of the signs where more attention is paid, the signs are aurally similar to a below average degree.
Conceptually, neither of the signs has a meaning for the majority of the public in the relevant territory, and, therefore, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. However, for a minority of the French public, which might see an allusion to luxury in the contested sign, and, therefore, for this part of the public since one of the signs (the earlier mark) will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
According to the opponent the earlier trade mark has a reputation in the European Union in connection with part of the goods and services for which it is registered, namely:
Class 3: Cleaning, preparations; Cosmetics; Perfumes, body deodorants; Essential oils; Soaps, cleansing milk; Cosmetic creams, gels, milks, lotions, masks, pomades, powders, serums and preparations for skin care; Anti-wrinkle preparations; Cosmetic preparations for lip care; Sun-tanning preparations (cosmetics), after-sun preparations (cosmetics); Cosmetic preparations for slimming purposes; Hair products (hair and scalp care preparations); Baths (Cosmetic preparations for -); Make-up and make up removing preparations; Preparations for shaving and after-shave preparations.
Class 5: (disposable).
Class 44: Hygienic and beauty care for human beings massages, beauty salons, care services (saunas), spas (care and beauty services), balneotherapy, physiotherapy, aromatherapy.
This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
On the 25/11/2016 the opponent submitted the following evidence via the Office’s online communication tool in relation to reputation:
A covering letter which states that “the company Laboratoire Nuxe has been incorporated in 1957 in France and has been using NUXE as its main trademark since that date. Since then and more especially since 1989 when the company has been purchased by its current owner, thanks to high quality products and with now 11 subsidiaries in Europe and all around the world, NUXE has yet become one of the famous cosmetic brands in France and in Europe.” The covering letter also lists the evidence as Exhibit 1 presenting numerous NUXE sales points, Exhibit 2 containing sales figures and invoices and Exhibit 3 containing press articles.
The submissions that are on file do not include an Exhibit 3 or any evidence regarding press articles, but do include two copies of Exhibit 1 and two copies of Exhibit 4 (related to the opponent’s claim to a family of marks). As the Opposition Division has not received Exhibit 3 the decision must be based on the evidence that has been sent within the established time limit.
Exhibit 1: 54 pages split into 13 documents. Documents 1 through to 12 show photographs of shop windows or display shelves of ‘NUXE’ products being offered for sale in Belgium, Denmark, France, Germany, Ireland, Poland, Sweden, United Kingdom, Italy, Greece, Spain and Portugal. The majority of the photographs are undated. Document 13 contains 5 pages of an undated internal spreadsheet style document listing distributors in the United Kingdom, Northern Ireland and ROI (Republic of Ireland). Document 14, which is referenced in the opponent’s cover letter as “List of distributors in Northern Ireland” does not appear in either of the two copies of Exhibit 1 filed at the Office, although, as already mentioned above, Document 13 does mention some Northern Irish distributors.
Exhibit 2: Consists of sales figures and invoices. The sales figures are contained in two 2 page internal spreadsheet style documents, entitled “CA Net Sell-In Produits (€)” and “Valeur Moyens Moteurs (€)” which list figures country by country and for the years 2008 through to 2013. The largest figures are for France which show “CA net sell-in produits” as growing from EUR 51 million in 2008 to EUR 97 million in 2013. The other evidence consists of 14 invoices, sent to customers in 12 different countries within the European Union and dated between 02/01/2012 and 26/09/2012. The invoices show the sale of various ‘NUXE’ items such as body milk, body gel, men’s shaving gel, men’s deodorant, rose petal lotion, body scrub, etc. The invoices total to approximately EUR 876,000, although three of the invoices show sales from the opponent, Laboratoire Nuxe, to what appear to be company subsidiaries (namely Laboratoire Nuxe España, S.L.U., Laboratoire Nuxe Italia SRL and Nuxe Belgium S.A.) for a total of approximately EUR 576,000.
Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.
The evidence above consists in part of internal documents (Exhibit 1’s list of distributers and Exhibit 2’s sales figures). These internal documents and the statements in the opponent’s cover letter (and it is worth noting that the cover letter is not a document such as an affidavit or a sworn declaration) originate from the opponent and as such, their probative value is limited. Statements coming from the sphere of the owner of the earlier mark (drawn up by the interested parties themselves or their employees) are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (decision of 11/01/2011, R 0490/2010-4, BOTODERM, § 34). The final outcome depends on the overall assessment of the evidence in each individual case. In general, further material is necessary for establishing evidence of use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Therefore, the probative strength of the further material submitted is very important.
The other evidence consists of photographs of shop windows or display shelves and invoices. The photographs show a use of the mark, although they are mostly undated and the exact locations are not always obvious. Furthermore, and even setting aside the issue of dates, they are clearly not sufficient to support the sales claims as, for example, there is a single photograph of a Danish outlet showing one display of ‘NUXE’ products and yet the sales figures are given as approximately EUR 3.3 million over the period 2008 to 2013. These also do not corroborate the long standing use claimed by the opponent in its cover letter going back to 1957. Finally, the photographs do not assist the Opposition Division in assessing to what degree the public is aware of the trade mark in question as one or two photographs per country, whilst indicating use, does not indicate that the goods are being brought to the attention of a wide audience.
The remaining evidence, namely the invoices, does show clear evidence of use and shows a large volume of sales during a nine month period in 2012. However, the fact that well over half of these sales are to subsidiaries does not assist in the opponent’s claim to reputation, because these sales are not shown to be directed at the end consumer, whose appreciation of the trade mark is key in a finding regarding reputation, but instead are sales to the opponent’s own subsidiaries.
The evidence submitted by the opponent, whilst showing use for some goods, does not show evidence of the intensity of the use or the turnover achieved or the market share gained under the earlier trade mark. Likewise it shows little evidence of the long standing use claimed by the opponent; of the clearly acceptable and dated evidence submitted, namely the invoices, the oldest is from January 2012. Furthermore, the evidence does not allow the Opposition Division to conclude on the proportion of the public which identifies these goods and services as originating from the opponent as none of the evidence gives any direct insight in to the perception of trade mark by the public.
Therefore, the evidence filed does not prove that the earlier mark has reached the required threshold for enhanced distinctiveness or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The goods and services have been found partially identical and partially similar to various degrees, whilst the signs have been found visually similar to a low degree, aurally similar to a below average degree and either a conceptual comparison is not possible or the signs are not conceptually similar. The distinctiveness of the earlier mark is normal and the attention of the relevant consumer will vary from average to high.
Given that the similarities between the signs concerns three letters that appear at the end of the signs and that these three letters do not have an independent distinctive role within the signs, but are in fact indivisible components of them and that the beginnings of the signs are very different, it is unlikely that the public may actually confuse the signs or assume that the goods and services in question would originate from the same or economically linked undertakings.
The opponent also refers to two previous decisions of the Office to support its arguments, namely Opposition Division decision of 24/04/2014, B 2 219 585, LU/ and the Boards of Appeal decision of 13/12/2012, R0568/2012-1 /LEDURO.
However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. The previous cases referred to by the applicant are not relevant to the present proceedings. This is because in both of them the contested signs consisted of the entire verbal element of the earlier marks with the addition of the letters ‘LE’. However, this is not the case here where ‘NUXE’, which is the entirety of the earlier mark, is not present in the contested sign; instead only a subset, namely the last three letters are.
Therefore, the above argument of the opponent has to be set aside.
It remains necessary to consider the opponent’s argument that the earlier trade mark, characterised by the presence of the element ‘NUXE’ constitutes a ‘family of marks’ or ‘marks in a series’ along with several other trade mark registrations owned by the opponent. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains similar letters as the earlier mark, will be led to believe that the goods and services identified by that mark may also come from the opponent.
The concept of the family of marks was analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65. When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.
Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series.
In the present case, the contested sign does not contain the element ‘NUXE’. Therefore, it lacks the characteristic element to the opponent’s claimed ‘family of marks’ and the opponent’s argument in that regard is set aside, without even examining whether the other condition, as mentioned above, has been satisfied.
Considering all the above, there is no likelihood of confusion on the part of the public.
The opponent has also based its opposition on the French trade mark registration No 1 688 882 for the word mark ‘NUXE’ and registered for goods in Classes 3 and 5.
This mark is the same as the European Union trade mark which has just been compared and it covers a narrower scope of goods. Given that the French trade mark is the same sign as the European Union trade mark already compared, the reasoning which led the Opposition Division to establish that no likelihood of confusion existed in respect of the European Union trade mark also applies in relation to the earlier French trade mark, and consequently no likelihood of confusion exists on the basis of this other earlier mark.
Therefore, the opposition on the ground of Article 8(1)(b) EUTMR must be rejected.
REPUTATION – ARTICLE 8(5) EUTMR
In relation to Article 8(5) EUTMR, the opponent invoked European Union trade mark registration No 4 345 989 and French trade mark registration No 1 688 882 both for the word mark ‘NUXE’. The opponent claims repute in the European Union for the first of these marks and France for the second one.
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
- The signs must be either identical or similar.
- The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
- Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.
- Reputation of the earlier trade mark
The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.
Conclusion
As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the trade marks ‘NUXE’, on which the opposition is based, have a reputation in any part of the European Union or France, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected, insofar as it is based on this ground and the earlier European Union trade mark registration No 4 345 989 and French trade mark registration No 1 688 882.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Chantal VAN RIEL | Ric WASLEY | Lucinda CARNEY |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.